image: What About Yves image: What About Yves

The Fashion Law Exclusive – Jeanine Heller, the founder of “parody” tee brand, What About Yves, has been slapped with a strongly worded trademark infringement suit by Chanel. According to Chanel’s suit, which was filed last week in the Southern District of New York, Heller is “displaying, offering for sale, and selling on her website, and selling to third-party retailers, a t-shirt and a sweatshirt bearing Chanel’s CC monogram mark with an image of an animated ghost commonly associated with the motion picture Ghostbusters.”

The tee at issue has been titled the “Official Chanel X Ghostbusters Sweatshirt Design” and Chanel’s counsel continues on to state not only that consumers are likely confused by unauthorized use of its trademark but also that Heller is not transforming the world famous Chanel mark in any way, commenting, or “transforming the mark” (language that refers to the standard for parody and fair use defenses).

Instead, Chanel’s counsel asserts that she is using the “clearly recognizable CC monogram mark [on] her own clothing precisely because of the iconic status of the mark, with knowledge of its association with Chanel, in order to call to mind Chanel.” How does Chanel know that Heller is doing this? Well, “the fact that [her] description of her products bearing the CC Monogram specifically refers to ‘Chanel’ evidences her knowledge of the unique association of the CC Monogram with [Chanel].”

Essentially, Chanel is saying that Heller knows that the mark she is employing on the designs is Chanel’s, and for this exact reason, she is using the mark (and the fact that it is internationally recognized and desired) to market and sell her own designs. Chanel states that Heller’s use of the Chanel mark “is not for purposes of parody … to make a statement about Chanel or its products,” which would serve as a defense to trademark infringement.

Chanel claims Heller is “simply exploiting the commercial value if the Chanel mark for her commericl benefit and to otherwsie trade on Chanel’s reputation.” And I would argue that the Paris-based design house has a point, especially if you look at the other wares being offered on the What About Yves website (think: LVMH, Dior and Hermes “parodies”). Chanel further claims that Heller is merely “intends to reap the benefit of the goodwill that Chanel has created in its trademark.” Ouch.

I put parodies in quotations because of the presumptuous nature of using that term, a legal term of art, in connection with this flurry of designs that have been hitting the market over the last several years. As we have told you in the past, the vast majority of designers, retailers, journalists, bloggers, etc. are grouping together all of the recent garments and accessories that make use of another brand’s name and/or logo, and label them as parodies.

The automatic characterization of these designs as parodies is very likely doing the creators a big favor. Instead of labeling these creations as illegal (by way of trademark infringement or trademark dilution), which is they likely what they amount to in most cases, the designs are being labeled “parodies,” and thus, we are assuming they are protected under the doctrine of Fair Use. (More about this here). This is the issue that comes at the center of Chanel’s suit here.

So, what does Chanel want? According to the complaint, which alleges federal trademark infringement and dilution, and unfair competition, common law trademark infringement and dilution, and unfair competition, and violations of the New York Deceptive and Unfair Trade Practices Act, among other claims, Chanel is asking the court to prohibit Heller from further selling any goods bearing the Chanel mark.

But that is not all. Chanel wants all Heller to deliver to Chanel’s attorneys for destruction “all goods, labels, tags, signs, stationary, prints, packing, promotional and marketing materials,” etc. Then there are the monetary damages that include “all gains, profits, and advantages derived by the Defendant from her unlawful conduct … awarding Chanel an amount up to three times the amount of actual damages sustained.”

If the What About Yves name sounds familiar, it is because it was this brand’s “Ain’t Laurent Without Yves” tee that lead Saint Laurent to sever ties with Colette, the famed Parisian boutique, after the store began stocking the t-shirt parodying creative director Hedi Slimane’s decision to drop ‘Yves’ from the brand’s name.

UPDATED (April 12, 2015): Chanel and Heller quietly settled their lawsuit late last year after a rather interesting several months between the two. According to court documents, the Southern District of New York court issued a Notice of Voluntary Dismissal in response to a motion by Chanel to have the trademark lawsuit dismissed.